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Calling all Australian patent applicants: amendments to a specification to now conform to Article 123(2) of the European Patent Convention

The changes to Australian Patent Law that occurred with the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 have been widely reported. Most of these changes, which did not take effect until 15 April 2013, only apply to those Patent Applications on which a request for examination was filed on or after this date. This means that most of the Patent Applications currently being examined by the Australian Patent Office are proceeding under the pre-15 April 2013 examination route. The number of Applications proceeding under the post-15 April 2013 examination route is currently much smaller. A consequence of this is that there is, to date, little or no indication as to how the Australian Patent Office is going to apply the changes introduced by the amendments. One key change that deserves serious consideration is the change to the criteria governing allowable Claim amendments.

The provisions for making amendments under the pre-15 April 2013 Patents Act 1990, which result in a claim to matter previously “in substance disclosed” being allowable, are relatively generous. The test for what is meant by “in substance disclosed” is also comparatively generous. Instead of requiring word-for-word support in the Specification, no more than a “real and reasonably clear disclosure” is required. Other amendments made to the Specification, but not to the Claims, of a pending Application to which the pre-15 April 2013 Patents Act 1990 applies, may include adding new subject matter such as additional Examples, provided that no claim is made to, or no Claim includes, that new subject matter.

Under the post-15 April 2013 Patents Act, an amendment made to a Complete Specification is not allowable if, as a result of the amendment, the Specification would claim or disclose matter that “extends beyond that disclosed” in the Specification as filed and in other prescribed documents. This language is almost identical to that of Article 123(2) of the European Patent Convention upon which the Australian amendment was modelled. While the statutory language governing allowable amendments is now harmonized between Australia and Europe, the interpretation of this language by Australian Patent Examiners and Australian Courts is yet to be determined.

It is generally accepted that in practice the EPO requires literal support, on a word-forword basis, of any amendment. The EPO famously, or perhaps infamously, applies a strict standard to the interpretation of Article 123(2). There are various types of amendments which the EPO considers to be “added subject matter” that illustrate just how comparatively strict the EPO standard is. The first example routinely encountered is that Claim amendments that remove features, described as being essential, from an independent Claim are unallowable. This example is not all that surprising from an Australian perspective, because such amendments would most likely have been objected to by Examiners under the “fair basis” requirement under the pre-15 April 2013 Patents Act.

However, it is the other examples of unallowable amendments that are routinely encountered before the EPO, where practice may change in Australia. The first of these is the case in which features are combined from different embodiments and the resulting particular combination is not disclosed in the Specification. Under current practice in Australia and hence under the pre-15 April 2013 Patents Act, practitioners typically multiply append Claims to broaden the scope thereof and to assist in reducing excess Claims fees. If there is now a need for each claimed embodiment to be exemplified in the Description, much more careful analysis of the Specification will be required before Claims are amended in this way. The second is known as “intermediate generalisations” in which a feature is taken from a specific embodiment and added to a claim. The rationale for the objection to “intermediate generalisations” is that the feature, although supported literally, is only disclosed in combination with the other features of that specific embodiment. Again, such amendments have been allowable in Australia, but this might change if the European approach to amendments is adopted in Australia.

Even though the post-15 April 2013 Patents Act is now in force, we will probably not see its effect with respect to the standard for what amendments are now going to be considered allowable for some time. The large number of requests for examination filed in order to have Applications considered under the pre-15 April 2013 Patents Act mean that, with the possible exception of Applications on which expedited examination is requested, it may be several years before we know just how high the bar has been raised with respect to the allowability of amendments in Australia.

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